IP and Brexit – after the transition

In this article, we look at the effect the end of transition period on 31December 2020 will have on:

• Registered EU trade marks and International trade mark registrations protected in the EU (collectively referred to below as “EU Trade Mark Registrations”);
• Registered Community designs and International design registrations protected in the EU (collectively referred to below as “EU Design Registrations”); and
• Community unregistered design rights.

We refer to EU Trade Mark Registrations and EU Design Registrations collectively as “EU Registrations”.

This briefing focuses on the changes affecting these rights.

Executive summary

• EU Registrations will automatically be “cloned” into corresponding UK registrations on 31 December 2020, subject to the rights owners issuing an “opt out” notice. (Note that unpublished registered designs will not be cloned in this way, but will be treated as pending applications.)
• Applications for EU Registrations which are pending on 31 December will not be cloned into corresponding UK applications. However, new corresponding UK applications can be filed on the priority of these applications within 9 months of Transition Expiry (i.e. before 30 September 2021).
• Existing unregistered Community design rights will continue to be protected in the UK for the remainder of their term. The UK will create a new equivalent unregistered design right.
• EU residents and companies will no longer qualify for the existing UK unregistered design right.

EU Registrations

On 31 December 2020, existing EU Registrations (EU Trade Mark and Design Registrations) will automatically be “cloned” into the following corresponding UK registrations (referred to below as “Corresponding UK Registrations”), without any application procedure or fees:

• An EU trade mark will be “cloned” as a “comparable trade mark (EU)”
• An International trade mark registration (EU designation) will be “cloned” as a  “comparable trade mark (IR)”
• A Registered Community design will be “cloned” as a “re-registered design”
• An International design registration (EU designation) will be cloned as a “re-registered international design”

Note that European registered designs whose publication is deferred on 31 December 2020 will not be “cloned”:  these will be treated on the same basis as pending design applications, discussed below.

These cloned registrations (referred to below as “Corresponding UK Registrations”) will have the following features:

• They will keep the filing/priority date of the “parent” EU Registration.
• In the case of comparable trade marks, they with keep any UK seniority date of the “parent” European Trade Mark Registration.
• They will become an independent UK national registration which can be enforced, challenged, assigned, licensed and renewed separately from the “parent” EU Registration.
• Separate UK renewal fees will apply.
• They will retain the existing renewal dates of the “parent” EU Registration.

Pending applications

Applications for EU Registrations which are pending on 31 December 2020 will not be “cloned” into corresponding UK applications.

These applications, and European registered designs which have not been published by 31 December 2020, entitle the applicant to file a separate corresponding UK national application. This can claim the filing or priority date of the EU application, and can be filed up to and including 30 September 2021.    

Opt out notice

The proprietor of an EU Registration may, at any time on or after 31 December 2020, notify the UK IPO that their EU Registration is not to be treated as a registered UK right (the so-called “opt out” notice).  The  effect of an opt out notice is that the Corresponding UK Registration ceases with effect from 31 December 2020 to be treated as if it had been registered and will be removed from the UK register. (There are some exceptional circumstances where this is not possible.)

Pending revocation and invalidation proceedings

Where a registered EU trade mark or registered Community design is the subject of invalidity or revocation proceedings which are pending on 31 December 2020 these could affect the cloned UK trade mark or registered design. If the ongoing proceedings eventually lead to the EU trade mark or registered Community design being declared invalid or revoked by a final decision, the Corresponding UK Registration will normally also be declared invalid or revoked.  However, this does not follow if the grounds of revocation or invalidity would not have applied to a UK national registration (e.g. where these were based on a national registration in an EU member state, or the meaning of a word in an European language other than English).   This will not affect International Registrations which are the subject of such proceedings.

Use

Trade mark owners will be familiar with the requirement to use their trade mark for the goods/services for which it is registered use so that it does not become vulnerable to revocation, but how will this be affected by the “cloning” of UK registrations?  Use of a trade mark in the 5-year period before 31 December 2020 in connection with the relevant goods and services, in either the UK or the EU, will constitute genuine use of the relevant EU trade mark or UK comparable trade mark.  However, the only relevant use after 31 December for a comparable UK trade will be use in the UK. Likewise, in the case of an EU trade mark, only use in the EU will be relevant.

Unregistered design rights

Unregistered Community design rights will not be protected in the UK after 31 December 2020.  However, any existing rights will be separately protected in the UK for the remainder of their 3 year term (as “continuing unregistered Community designs”).

The UK will create a new unregistered design right equivalent to unregistered Community design rights, known as a “supplementary unregistered design”. This will begin on 31 December 2020, and will apply to the UK only.  

After 31 December 2020:

• EU residents and companies will no longer qualify for existing UK unregistered design rights and first disclosure of a design in the EU will no longer be sufficient to establish such rights.
• first disclosure of a design in the UK will not establish an unregistered Community design right.

Assignments, licences, security interests and other agreements

Transactions relating to EU Registrations are subject to specific arrangements.

• Where an EU Registration has been assigned, but the assignment has not been recorded on the EU register by 31 December 2020, the assignee can apply to record the assignment of the Corresponding UK Registration on the UK register.
• If an EU Registration is the subject of an ongoing licence which covers the UK, unless otherwise agreed by the parties, that licence shall continue to apply to the UK.  An application can be made by either the licensee or the proprietor within 12 months of 31 December 2020 to record the licence against the Corresponding UK Registration.
• If an EU Registration is the subject of an ongoing security interest, an application can be made by either party within 12 months of 31 December 2020 to record the security interest against the Corresponding UK Registration.

Representation

The UK will allow a period of transition to update representatives of Corresponding UK Registrations “cloned” from EU trade marks and registered Community designs: it will not be necessary to appoint a UK representative for such Corresponding UK Registrations until 1 January 2024.   However, we understand that the UKIPO will correspond with non-UK representatives by post only. 

Only UK representatives can be appointed as new representatives for these Corresponding UK Registrations.

In the case of International trade mark and design registrations (EU) which are “cloned”, it will be necessary to appoint a UK representative for the Corresponding UK Registration with effect from 1 January 2021.

If you would like to discuss any of the implications on your brands, copyright, IP disputes or patents with our IP team please do get in touch